1. The Respondent repeats and relies upon the matters stated in Category 2 above – Illegitimacy

2. Further, it should be remembered that is was not the Respondent that initiated contact between the Respondent and the Complainant. This is consistent with and supports the contention of the Respondent that he does not wish to sell the disputed domain name because it was acquired for the stated legitimate business and commercial reasons noted above.

3. The Respondent has not posted a “sale price” at the URL address and the site is not for sale.

4. The Respondent has acquired or registered 2 only domain names (viz. “daydreamisland.com and sovereignislands.com”) which are similar to names given to islands along the Eastern Australian Coast and which include the following islands:

* South Molle Island

* Lindermann Island

* Lady Musgrave Island

* North Molle Island

* Hayman Island

* Gloucester Island

* Curtis Island

* Thursday Island

* Hinchinbrook Island

* South Stradbroke Island

* North Stradbroke Island

* Great Keppel Island

See Exhibit 5

At the time of the registration of the disputed domain name all of the islands listed above had domain names utilizing their geographical names available for registration as a dotcom.

IN THE PREMISES, THE RESPONDENT DID NOT, AND DID NOT EVER INTEND, TO CORNER THE “DOTCOM” MARKET IN DOMAIN NAME FOR ALL OF THE ISLANDS STRETCHING THE ENTIRE EASTERN AUSTRALIAN COASTAL REGION.

5. A mere corporate preference on the part of the Complainant to hold the registered domain name “daydreamisland.com” is not sufficient or any evidence of bad faith on the part of the Respondent.

The correspondence between the Complainant and its Lawyers (Letters 2 June 2000 and 8 August 2000 – Annexure “E” to Complainant’s Annexure 2) discloses clearly that the Complainant’s corporate preference is to abandon “daydream.net.au” and obtain the disputed domain name. The preference is based upon an internal management perception of marketing. On their own evidence, the domain name “daydream.ent.au” is attracting many hits… so the Complainant’s commercial reasoning is also open to question. It can hardly be said (much less demonstrated) that the Complainant’s commercial interests are being harmed by reason of its not having secured the disputed domain name… particularly when other more suitable names are available.

6. Further, the material contained in the correspondence of Redchip Lawyers to Roger Powell (Letter dated 20 June 2000, Complainant’s Submissions Annexure “F”) appears to indicate that the Complainant has set out to entrap the Respondent by making a “phoney” offer with the intention of building a case in these proceedings were that offer to be accepted.

That letter states in part:

“In our attempts to have the domain transferred to Daydream Island Pty Ltd we suggested you write to Alessandro Sorbello on the company’s letterhead in accordance with the attached draft.

You will notice in the attached letter we suggest that Daydream Island Pty Ltd maybe interested in purchasing the domain name off Alessandro Sorbello.

The purpose of this letter is to confirm that Alessandro Sorbello has registered the name in bad faith presumably for the purposes of selling it to Daydream Island Pty Ltd…

Should you receive an offer to buy the name for consideration from Alessandro Sorbello we will proceed to make an Application for transfer of the name.

It is envisaged that Mr Sorbello’s offer to sell will be utilized as evidence of bad faith…”

It is submitted that as the Complainant was not is not able to produce any evidence of bad faith on the part of the Respondent, it then proceeded to embark upon a course of conduct designed solely to build a case in these proceedings. This conduct not only arguably amounts to misleading and deceptive conduct in breach of Consumer Protection Legislation currently in force in Australia but also reveals bad faith on the part of the Complainant in the prosecution of these proceedings.

7. The Complainant’s argument in paragraph 10 of its submission on “Bad Faith” is misleading as the Complainant does not have any rights in the words alone by reason of the express endorsement on each of the Complainant’s marks (see arguments in Submission 1 above). The Respondent has developed a Business Plan for the websites business to be conducted under the domain name “daydreamisland.com”. The Respondent has spent hundred of hours and many thousands of dollars in the planning and development of the “daydreamisland.com” concept. The Respondent’s Business Plan reveals that the Respondent engaged persons to design a logo (which is complete), undertaken market research and feasibility studies.

Again, there is no requirement at law or otherwise for the Respondent to “offer any evidence to the Complainant that he actually has or will use the name Daydream Island”: compare Annexure 2 “Illegitimacy”, para. 1 Again more importantly, the misleading nature of the Complainant did not ever request the Respondent to provide any such information either on an open or “without prejudice” basis but rather demanded that the Respondent sign and deliver to the Complainant a transfer form in the nature of an agreement.

Summary

The Respondent did not register the domain name in bad faith but for legitimate commercial reasons.

It was the Complainant who initiated contact with the Respondent. The Respondent did not “seek out” the Complainant in order to sell at a profit the disputed domain name.

The disputed domain name is not for sale.

The Complainant may have engaged in misleading and deceptive conduct in seeking to tender a “phoney offer” solely for the purpose of substantiating a case in these proceedings.

The Respondent is not set out to corner the market in dotcoms for domain names for all islands of Eastern Australian Coast… there is no pattern of conduct from which bad faith could be inferred.

A mere corporate preference on the part of the Complainant to hold the registered domain name “daydreamisland.com” is not sufficient or any evidence of bad faith on the part of the Respondent.

Conclusion

The Respondent has a legitimate and legal right to use the disputed domain name for legitimate business and commercial gain.

There is no, and no evidence of, bad faith on the part of the Respondent in registering or maintaining registration of the disputed domain name.

The Respondent has a legitimate commercial interests in and to the disputed domain name.

1. For some 2 years now, the Respondent has been involved in the planning and development of several targeted websites through which to develop further his commercial interests in ecommerce.

2. For this purpose, and this purpose alone, the Respondent obtained by way of registration a number of selected domain names including the disputed domain name.

3. The Respondent has not over sold any of the domain names referred to in paragraph 2 immediately above or indeed any domain name registered in his name…despite numerous offers.

4. It was not, and is not, the intention of the Respondent to embark upon the practice of “cybersquatting” ie. the practice of acquiring registered domain names for the sole purpose of selling them at a later date to a corporation for a higher price or profit.

5. The Respondent obtained the disputed domain name in December 1999 for legitimate business or commercial reasons. The Respondent intends that the domain name “daydreamisland.com” will be utilized in a Website with an “Art, Poetry and Music” concept or theme. Similar websites include:

6. The Respondent has spent hundred of hours and many thousands of dollars in the planning and devolpment of the “daydreamisland.com” concept.

7. The Respondent has developed a Business Plan for the websites business to be conducted under the domain name “daydreamisland.com”.

THE CONTENTS OF THE BUSINESS PLAN CONTAINS COMMERCIALLY SENSITIVE INFORMATION WHICH IS CONFIDENTIAL BUT THE RESPONDENT WILL, IF REQUESTED, PROVIDE A COPY TO THE PLANELIST ON A CONFIDENTIAL BASIS AND ON THE BASIS THAT IT NOT BE DISCLOSED TO THE COMPLAINANT OR ANYONE.

8. The Respondent commenced Website site design for “daydreamisland.com” immediately upon registering the domain name in December 1999. Development has taken place on a local server and the website is “parked” at another URL address during construction and pending completion and launch.

THE ADDRESS OF THE URL IS CONFIDENTIAL BUT THE RESPONDENT WILL, IF REQUESTED, PROVIDE THE ADDRESS TO THE PANELIST ON A CONFIDENTIAL BASIS AND ON THE BASIS THAT IT NOT BE DISCLOSED TO THE COMPLAINANT OR ANYONE.

It is not usual for a web page under construction to be parked at another URL during development with the websites address disclosing merely that the domain name is no longer available:

Eg. Browser search for “www.cutthroatisland.com” reveals site unavailable being unable to determin IP address from host name

9. There is no requirement at law or otherwise for the Respondent to “offer any evidence to the Complainant that he actually has or will use the name Daydream Island”: compare Annexure 2 “Illegitimacy”, para. 1 More importantly, again the misleading nature of the Complainant’s submission fails to point out that the Complainant did not ever request the Respondent to provide any such information either on an open or “without prejudice” basis but rather demanded that the Respondent sign and deliver to the Complainant a transfer form in the nature of an agreement: See Exhibit 10

10. For the reason disclosed in paragraph 9 above, the Complainant’s argument that:

“Any assertion of future use is in the Complainant’s opinion, unsatisfactory as the Respondent has not conducted any advertising campaigns, market tests, focus groups, logo design or any other related outlays with a bona fede offering of goods or services” completely lacks credibility.

The Respondent’s Business Plan reveals that the Respondent engaged persons to design a logo (which is complete), undertaken market research and feasibility studies ALL OF WHICH ARE CONFIDENTIAL AND LEGITIMATELY IN THE RESPONDENT’S COMMERCIAL INTERESTS NOT TO DISCLOSE OR BE FORCED TO DISCLOSE BY REASON OF THESE PROCEEDINGS OR OTHERWISE.

Summary

The Respondent has for some 2 years now, been involved in the planning and development of several targeted websites including “daydreamisland.com”.

The Respondent obtained the disputed domain name in December 1999 for legitimate business or commercial reasons. The Respondent intends that the domain name “daydreamislan.com” will be utilized in a Websites with an “Art, Poetry and Music” concept or theme.

The Respondent has developed a Business Plan for the websites business to be conducted under the domain name “daydreamisland.com”.

The Respondent commenced Website site design for “daydreamsisland.com” immediately upon registering the domain name in December 1999. Development has taken place on a local server and the website is “parked” at another URL address during construction and pending completion and launch.

The Respondent has spent hundred of hours and many thousands of dollars in the planning and development of the “daydreamisland.com concept.

The Respondent’s Business Plan reveals that the Respondent engaged persons to design a logo (which is complete), undertaken market research market and feasibility studies.

Conclusion

The Respondent has a legitimate and legal right to use the disputed domain name for legitimate business and commercial gain.

The Complainant’s evidence and argument as to illegitimacy completely lack credibility. The Complainant’s submissions lack candour and are misleading.

2. The Complaint’s submission fails to articulate the following limitations on its otherwise monopolistic rights:

a) The rights granted are pursuant to an Australian domestic statute which grants monopolistic rights in and through Australia and its Territories only: Section 4 Trade Marks Act 1995 (“the “Act”).

The Act also extends to signatory countries of the Berne convention and limited international protection is also afforded by other treaties or conventions. Monopolistic rights conferred bu the Trade Marks Act 1995 do not extend worldwide. As is later argued the Complainant’s domestic and international commercial interests can be suitably protected by its making use of the domain name “daydreamisland.com.au”, “daydreamislandresort.com.au”, “daydreamisland.biz” or “daydreamislandresort.biz” which are currently or will be available.

b) Each of the Complainant’s marks contains a distinct image (Island with Palm Trees) all of which incorporate the words “daydream island”. It is the collective image (ie. Picture and words) in respect of which monopolistic rights accrue (and then only when used in connection or with the individual class) not in respect of the words alone.

c) Moreover, each of the Complainant’s marks is subject to an express “Endorsement” (noted at the foot of each) which provides in effect that the monopolistic rights do not extended to exclusive use of the words “Daydream Island” or any derivative (“the words”). Accordingly, other persons or entities in and throughout Australia are therefore permitted to utilize the words alone in any manner without fear of infringement of the Complainant’s marks.

d) Finally, each of the marks is also limited to a “Class” (eg. Class 30, etc) which further delimits the monopolistic utility of each of the marks to a specified class of goods and services: Exhibit 3a

3. More importantly the Complainant’s submission fails to disclose the fact that other domestic corporations are the proprietors of Registered Trade Marks in Australia which are comprised of or include the words “daydream” (are therefore can be reasonably said to be identical to or confusingly similar to the Complainant’s marks), namely: -

Registered Trade Marks

a) Trade Mark: 513184

Word: DAYDREAM

Image:

Lodgment Date: 20-JUN-1989

Class/es: 30

Status: Registered

Kind: n/a

Owner/s: National Foods Dairy Foods Limited

ACN: 002 400 339

Accepted/Pending Trade Marks

b) Trade Mark: 827831

Word: DAYDREAMS

Image:

Lodgment Date: 15-MAR-2000

Class/es: 26

Status: Accepted

Kind: n/a

Owner/s: DNZ Limited Partnership

c) Trade Mark: 858680

Word: DAYDREAMS DAY DREAMS DayDreams

Image:

Lodgment Date: 28-NOV-2000

Convention Date: 08-NOV-2000

Class/es: 25

Status: Indexing Approved

Kind: n/a

Owner/s: Ezibuy Limited

See Exhibit 8

The significance of this information, which the Complainant failed to disclosed, is obvious.

Firstly, any claim to exclusivity of proprietorship on the part of the Complainant in the words “daydream” or “daydream island” whether express or implied is exposed as misleading.

Secondly, the scope of any monopolistic rights in the words “daydream” or “daydream island” reposed in the Complainant under the marks is necessarily curtailed by reason of the co-existing grant of rights in and to the words “daydream” or “ daydream island” to third parties.

4. The Complainant’s submission contains further misleading information not supported by verified fact:

Exhibit 1 to this submission provides information obtained from the Queensland Department of Natural Resources – Place Name Details Report.

This information directly contradicts the facts stated on behalf of the Complainant in Annexure 1-4b point 11, namely, the Complainant states:

“The original geographic name of the island was West Molle Island, part of the Molle Group. Because of the substantial goodwill and international recognition of the business the Complainant conducts on the island, Australia’s National Mapping Agency, now formally recognizes West Molle Island ad Daydream Island.”

The material obtained from the Queensland Department of Natural Resources reveals that in truth and in fact, the name “Daydream Island” originated as follows:

“Daydream Island

For many years, the Island know to most Queenslanders as “daydream” has had an alternative name – West Molle Island. The name “Molle” has its origin in “Port Molle”, a name given by Lieutenant Charles Jeffreys R.N., 1815 to the anchorage in the lee of the south-east trade wind, formed by the Molle Group of Islands. Jeffreys used the name as tribute to his friend Colonel George Molle of the 46th Foot Regiment.

When Major Paddy Murray sailed into the Whitsunday area in 1933, in his yacht “Daydream” he bought West Molle Island and called it after his yacht. Very few people in 1989 would be aware of the name “West Molle Island” and it is proposed to omit the name to remove any unnecessary confusion on marine charts.”

See Exhibit 1a

5. The Complainant does not deal adequately with issue of the identity and interests of the Complainant in and to the business conducted on and from the Island.

The Complainant’s material together with searches conducted on behalf of the Respondent with the Australian Securities and Investment Commission reveal that it is a non-party to this proceeding, Daydream Island Pty Ltd CAN 089 923 580 (“the non-party”), (and not the Complainant or the related entity) which asserts in writing that it is the “operating entity of Daydream Island Resort located in the Whitsunday’s off the North Queensland Coast”: See Letter Daydream Island to the Respondent dated 21 June 2000 and also letter 19 July 2000 being Exhibit 9 hereto.

No information is provided as to the existence or scope of any licensed rights between the Complainant or the related entity and the non-party- to support or substantiate the Complainant’s assertion that its commercial interest are being harmed…particularly where neither the Complainant nor the related entity carry on business on the island.

Summary

The Complainant and the related entity only came into existence a few months prior to the registration of the disputed domain name by the Respondent. The Complainant purchased an interest in the island only 1 month prior to the Respondent registering the disputed domain name in December 1999.

The name “Daydream Island” was derived from the name of a yacht in 1933 owned by Major Paddy Murray and not by reason of the substantial good will and international recognition of the Complainant’s business. Moreover, it is the non-party and not the Complainant which carries on business on the island.

The Complainant obtains no “exclusive” monopolistic right to the words “daydream” or “daydream island” by reason of it being the owner of Registered Trade Marks 547732, 547733, 547794 and 552872 or otherwise.

The Complainant’s marks are each subject to an express endorsement that registration gives no rights to the exclusive use of the words “Daydream Island”. Many other Australian trademarks (registered and pending) incorporate the words “daydream” or “daydream island”.

Similarity in the words used in the disputed domain name and the Complainant’s marks (and indeed all other registered and pending marks) is lawful and permitted because the disputed domain name does not incorporate the image (picture).

The Complainant’s domestic and international commercial interests can be suitably protected by its registering and making use of the domain name “daydreamisland.com.au” which is currently available. This country local dotcom address also sits well with the fact of the parochial extent and scope of the domestic trade marks legislation.

The commercial interests of the Complainant can be adequately served by use of another suffix eg. “daydreamisland.com.au” or “daydreamsiland.biz”

Conclusion

There is therefore no exclusive right of use in either the Complainant’s marks of the words, “Daydream Island” or any derivative (including “daydreamisland.com”), accruing to the Complainant by reason of the registration of its trade marks.

It is misleading for the Complainant to assert (expressly or impliedly) that is has, by reason of its registered trade marks, a better or higher proprietary right than the Respondent (or anyone) to the use of the words, “Daydream Island” or any derivative (including “daydreamisland.com”)… as it plainly does not.

The use by the Respondent or anyone of the words “Daydream Island” or any derivative (including “daydreamisland.com”) alone ( ie without the distinct image or picture (being the Island with Palm Trees)) does not constitute an infringement of the Complainant’s marks and does not amount to the use of a domain name which is identical or confusingly similar to the Complainant’s marks which incorporate an image or picture as an integral component part.

About Me

Born in Milano and raised in Australia, Alessandro has spent extensive time living and working in Italy and is the Executive Producer of the Official Italian Week festival in Queensland, an Initiative of the Italian Consulate.